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January 19, 1999


The opinion of the court was delivered by: Shadur, Senior District Judge.


Stimsonite Corporation ("Stimsonite") asserts that NightLine Markers, Inc. ("NightLine"), Harry Lowe ("Lowe") and Charles O. Hiler & Son, Inc. (collectively "NightLine," treated as a singular noun) have infringed Stimsonite's U.S. Patent No. 5,277,513 ("'513 Patent") for snowplowable reflective highway pavement markers.*fn1 Stimsonite asks for injunctive relief, damages and an award of attorneys' fees and costs. NightLine has counterclaimed for (1) a declaratory judgment of its noninfringement or of the invalidity of the '513 Patent and (2) an award of "its interests, costs and expenses" (whatever that may mean).

Stimsonite and NightLine have now filed cross-motions for summary judgment that address only the infringement issue.*fn2 Each side has complied with this District Court's General Rules ("GR") 12(M) and 12(N),*fn3 which have been adopted to highlight the existence or nonexistence of any material factual disputes. Both motions are fully briefed and ready for decision. For the reasons set out in this memorandum opinion and order, NightLine's motion for summary judgment is granted, while Stimsonite's motion is denied.

Summary Judgment Standards

Familiar Rule 56 principles impose on a party seeking summary judgment the burden of establishing the lack of a genuine issue of material fact (Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)). For that purpose this Court must "read[] the record in the light most favorable to the non-moving party," although it "is not required to draw unreasonable inferences from the evidence" (St. Louis N. Joint Venture v. P & L Enters., Inc., 116 F.3d 262, 265 n. 2 (7th Cir. 1997)). Where cross-motions for summary judgment are involved, it is thus necessary to adopt a dual perspective that sometimes forces the denial of both motions. Fortunately that is not the result here.


Stimsonite has been developing and selling snowplowable reflective highway pavement markers for more than three decades. Those products are installed in highways to demarcate both the lines between lanes of traffic and the outer edges of the highways by reflecting light from automobile headlights to make the lanes and highway edges more visible at night. Such markers necessarily rise slightly above the surface of the highway to catch and reflect the light from the headlights. But that requirement causes problems in colder climates, where snowplows often have to remove snow from roadways. To be "snowplowable," such markers must be capable of withstanding the impact of a snowplow blade without being dislodged from the pavement.

Furthermore, snowplowable markers must be able to handle snowplow blades that strike them at an angle. As a practical matter snowplows do not simply move snow straight ahead — instead the plow blades are angled to push the snow to one side of the road. In 1980 Stimsonite obtained U.S. Patent No. 4,195,945 ("'945 Patent")*fn4 for a snowplowable marker that could handle plow blade angles of roughly 30° ('945 Patent col. 2 line 17). It manufactured its model 96 and 96LP markers under that now-expired patent.

But in recent years highway snowplows have been operating at higher speeds and with the use of greater blade angles. With that in mind, in the early 1990s Stimsonite developed a marker that could accommodate a snowplow blade angle of 50° — an asserted improvement over its prior products. In 1994 Stimsonite patented its new device, and that is the '513 Patent*fn5 at issue in this case.

Snowplowable markers typically comprise a plastic reflector mounted on an iron base. That base includes two ramps set side by side, with a reflector perpendicularly mounted between and below those ramps, thus creating a roughly "H" shape (viewed from above). That construction is designed to enable the snowplow blades to ride up and over the ramps without hitting the plastic reflector. Both the '945 and '513 Patents cover inventions whose ramps allow snowplowing in either direction. Stimsonite's '513 Patent describes a longer, narrower product than the prior art described in the expired '945 Patent, assertedly because that difference in dimensions allows the new invention to accommodate the greater plow blade angles.

Lowe is a former Stimsonite employee who now owns and is the only employee of NightLine (N. 12(M) ¶ 8). In recent years Lowe has attempted — both successfully and unsuccessfully — to introduce snowplowable markers into the market to compete with Stimsonite's products. For example, Lowe successfully manufactures the NightLine A250 marker, which is very similar to Stimsonite's products under the now-expired '945 Patent (S.12(M) ¶ 90). Lowe has previously failed, however, in his efforts to market another marker — the NightLine 250 marker — because Stimsonite sued him for infringement of the '513 Patent, to which Lowe responded by agreeing to stop making the 250 marker (S.12(M) ¶¶ 88-89).*fn6

Lowe renewed his efforts to compete with Stimsonite's new markers by designing the NightLine B250 and B350 markers, the accused products in this case, and by advertising them as competitive with the Stimsonite 101 and 101LP markers, which practice the '513 Patent's art (S.12(M) ¶¶ 92-93).*fn7 Stimsonite employees saw NightLine's new markers at a June 1997 trade show, after which Lowe gave Stimsonite his detailed drawings in an effort to demonstrate that no infringement was involved. Stimsonite was not satisfied, and it filed this infringement suit 10 months later.


Patent owners have a monopoly on their inventions during the term of their patents. But as the seminal opinion in Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185, 16 S.Ct. 1002, 41 L.Ed. 118 (1896) teaches:

  It is self-evident that on the expiration of a patent
  the monopoly created by it ceases to exist, and the
  right to make the thing formerly covered by the
  patent becomes public property. It is upon this
  condition that the patent is granted. It follows, as
  a matter of course, that on the termination of the
  patent there passes to the public the right to make
  the machine in the form in which it was constructed
  during the patent.*fn8

Thus our American patent system serves two equally important goals: to secure the patentee's rights (the definitional goal) and to put others on notice of what the patentee has removed from the public domain for the life of the patent (the notice goal) (Markman v. Westview Instruments, Inc., 517 U.S. 370, 373, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), quoting McClain v. Ortmayer, 141 U.S. 419, 424, 12 S.Ct. 76, 35 L.Ed. 800 (1891)).

To fulfill those dual functions, patent documents include both a claim and a specification. According to 35 U.S.C. § 112*fn9 "[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same." On the other hand, the claim must "particularly point [] out and distinctly claim[] the subject matter which the applicant regards as his invention" (id.). Indeed, the ...

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